Thursday, December 13, 2012

Early this month, Demitri Brown and Donna Evans-Brown (the “Browns”) filed a federal trademark infringement suit against Christopher Bridges p/k/a Ludacris, claiming that Luda’s “Disturbing Tha Peace” trademark is confusingly similar to their mark “Disturb the Peace.” However, “Disturb the Peace” has been cancelled since August 31, 2004. This means that the Browns no longer have a valid US Federal Trademark Registration, which ultimately means that they may likely only claim common law trademark rights and not Federal trademark rights.

On the other hand, Ludacris has several trademark registrations that incorporates “Disturbing Tha Peace” (Reg. Nos. 3159855, 2945795, 2923163, 2925238, 3220495, 2791443, and 3268946). Although the Browns allegedly have been using “Disturb the Peace” since 1988, as mentioned, the Federal registration was cancelled in 2004. Ludacris has been using “Disturbing Tha Peace” continuously since he started his record label “Disturbing Tha Peace Records” in 2000.

What does “cancellation” of a trademark mean? Cancellation is the proceeding instituted with the Trademark Trial and Appeals Board (TTAB), in which the petitioner alleges that the registered trademark was not or is no longer, a valid trademark. Cancellation may be based on the fact that a registered trademark is weak, it was procured by fraud, or it was abandoned. In Ludacris’ case, he claimed abandonment. This means that he alleged that the Browns have not used their trademark “Disturb the Peace” in connection with the sale of the goods specified in the Browns’ trademark application (Serial No. 76090517) for the statutory amount of time. Ludacris filed the petition to cancel the Browns’ trademark in late 2003. Default judgment was entered granting the cancellation because the Browns failed to respond to the petition. As such, the mark was effectively cancelled in 2004.

Seven years later, according to the documents pertaining to the Browns’ “Petition of Reinstatement”, which was actually treated as a motion for relief from the final judgment under FRCP Rule 60(b), of their cancelled mark with the TTAB, Ludacris allegedly committed fraud in his cancellation proceedings in 2003. Ultimately, the TTAB determined that, among other deficiencies in the petition, the seven-year wait would cause undue prejudice against Ludacris since, not only has Ludacris successfully registered multiple trademarks incorporating “Disturbing Tha Peace” in the interim, but he has also “spent in excess of approximately one million dollars over the years in marketing, advertising, and promoting” of the mark. In short, the TTAB denied the Browns’ petition.

This holding, although not necessarily binding on the federal district court case, may nevertheless be telling of what types of arguments each side will allege. It may very well be considered strong evidence that Ludacris essentially won the TTAB case because the Browns failed to diligently protect their federal trademark rights back in 2004 if they in fact did not abandon use of such mark. What is the moral of this story? Diligently follow up on the status of your trademark. Although it was not explicitly discussed in the TTAB’s Order, the Browns had an obligation to check the status of registration. In fact, Section 108.03 of the TMEP entitled “Due Diligence: Duty to Monitor Status” states the following:

Trademark applicants and registrants should monitor the status of their applications or registrations in cases where a notice or action from the USPTO is expected. Inquiries regarding the status of pending matters should be made during the following time periods:

(1) During the pendency of an application, an applicant should check the status of the application every six months between the filing date of the application and issuance of a registration; and

(2) After filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Act, a registrant should check the status of the registration every six months until the registrant receives notice that the affidavit or renewal application has been accepted.

Should the status inquiry reveal that a paper is lost, or that some other problem exists, the applicant or registrant must promptly request corrective action. 37 C.F.R. 2.146(i). Failure to act diligently and follow up with appropriate action may result in denial of the requested relief. The USPTO may deny petitions to reactivate abandoned applications and cancelled registrations when a party fails to inquire about the status of a pending matter within a reasonable time. See TMEP §§1705.05 and 1714.01(d).

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